Court Determination of the Likelihood of Confusion Between “Blurred” Elements in Trademarks

When considering disputes on infringement of rights to trademarks, special attention is paid to identifying strong and weak elements in the compared designations in order to determine the likelihood of their confusion in civil circulation. In this regard, in this article, I would like to touch upon the topic of "blurred" elements of designations and their impact on the court's conclusions on the likelihood of confusion of designations in civil circulation.

First of all, it should be clarified that it is within the framework of this article that the "vague" element of a trademark is understood as an element that is contained in various trademarks registered in the name of different right holders in relation to homogeneous goods and services.

In disputes on the protection of exclusive rights to trademarks, the question of the similarity of the disputed designation with a registered trademark is widely raised, since according to paragraph 3 of Article 1484 of the Civil Code of the Russian Federation, only the use of an identical or confusingly similar designation to the extent of a trademark in relation to homogeneous goods and services leads to a violation of the exclusive right of the right holder.

According to the explanations of the highest court, confusion is possible if, in general, despite some differences, the disputed designation can be perceived as a corresponding trademark or if the consumer can believe that the designation is used by the same person or persons related to the person who owns the trademark.

At the same time, in order to establish the fact of infringement of the exclusive right to a trademark, it is sufficient to have the probability of confusion of trademarks in civil circulation, which is determined on the basis of the degree of similarity of designations and the homogeneity of goods and services.

As stated in paragraph 162 of Resolution No 10, "The homogeneity of goods is established on the basis of the fundamental possibility that an ordinary consumer of the relevant product may have the idea that these goods belong to the same manufacturer. At the same time, the court takes into account the type (types) of goods, their purpose, the type of material from which they are made, the terms of sale of goods, the range of consumers, complementarity or interchangeability and other circumstances

The establishment of similarity is carried out by the court based on the results of comparison of the trademark and the designation (including by graphic, sound and semantic criteria), taking into account the evidence presented by the parties in their inner conviction. At the same time, the court takes into account what elements are similar - strong or weak elements of the trademark and the designation. The similarity of only unprotected elements is not taken into account."

It is necessary to understand that confusion can be established both with a low degree of homogeneity of goods, but a high degree of similarity of designations, and vice versa, with a low degree of similarity of designations, but a high degree of homogeneity of goods.

If the trademark and the disputed designation do not have any degree of similarity, or the goods for which the trademark is registered and the goods that are sold under the disputed designation are heterogeneous, then the court will state that there is no likelihood of confusion of designations in civil circulation.

At the same time, it is impossible not to take into account the position of the Intellectual Property Court, according to which "the complete absence of similarity of designations cannot be recognised in the presence of one completely identical verbal element, which is the only verbal element of the opposing trademark and one of the two verbal elements of the disputed trademark.

The presence of an identical verbal element in the compared trademarks indicates that there is a certain degree of similarity between the compared designations." (See Judgment of the Intellectual Property Court dated 06.06.2025 in case No А53-11796/2024; dated 07.10.2024 in case No А34-5035/2023; dated 07.02.2023 in case N A62-1744/2022, and others.).

However, it should be borne in mind that the coincidence of any element in the trademark and the disputed designation, even if the goods and/or services are homogeneous, does not in itself indicate an absolute danger of confusion of designations in civil circulation, since such an element must first of all be evaluated in terms of whether it is strong or weak in the compared designations.

For example, an element often used in trademarks may have less power than an element rarely found in trademarks.

Paragraph 2.471 of the WIPO Intellectual Property Handbook states that when comparing trademarks in which there is a common element, the fact that there are trademarks registered in the name of other rights holders containing a similar element should be taken into account. In this case, the consumer gets used to the use of such an element by different right holders and no longer perceives it as distinctive, characteristic of any one person.

A similar position is taken by Rospatent. Clause 7.3.2 of the Guidelines, approved by the Order of the Federal State Budgetary Institution "Federal Institute of Industrial Property" dated 20.01.2020 No 12, notes that "as an argument indicating the absence of a threat of confusion by consumers of the claimed designation and the opposing trademark, information may be provided that the coinciding or similar element of the compared trademarks is used as part of trademarks signs and designations used by third parties.

In this case, the fact of simultaneous use by many persons of coinciding or similar elements of trademarks and designations can be taken into account when assessing the significance of these elements in the compared trademarks and designations for the purpose of individualisation of the relevant goods and services. In particular, taking into account the specific circumstances, it can be concluded that the element included in a large number of trademarks and designations is weak and its coincidence or similarity in the compared trademarks and designations does not in itself lead to their confusing similarity."

The above approach, for example, was reflected in the ruling of the Tenth Arbitration Court of Appeal dated 27.12.2022 in case No A40-139545/2023, where the court, concluding that there is no likelihood of confusion of the disputed designation and the trademark, points out that "the mere presence of a star placed on the compared designations cannot be recognized as a fundamental distinguishing feature, since the shape of the star itself is used by many manufacturers for marking a huge variety of different goods. Information that consumers associate the shape of the star exclusively with the plaintiff's goods is not presented in the case materials.

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In this case, the fact of simultaneous use by many persons of coinciding or similar elements of trademarks and designations can be taken into account when assessing the significance of these elements in the compared trademarks and designations for the purpose of individualisation of the relevant goods and services. In particular, taking into account the specific circumstances, it can be concluded that an element included in a large number of trademarks and designations is weak, and its coincidence or similarity in the compared trademarks and designations does not in itself lead to their confusing similarity.

Solagift presented evidence in the case materials indicating a variety of existing trademarks using a designation in the form of a five-pointed star, registered in relation to goods of the 3rd and 5th classes of the Nice Classification, in connection with which the court believes that the mere presence of such a designation cannot lead to an unambiguous confusion by consumers of the plaintiff's trademark and the disputed designation, used by the defendants".

Thus, it can be seen that the presence of a coinciding element in the trademark and the disputed designation does not in itself mean that the designations will be recognised as confusingly similar. The assessment of the strength of the matching element is crucial.

An element widely used by many right holders for homogeneous goods is perceived by consumers as weak, not having high distinctiveness and not indicating a specific manufacturer. The coincidence of such "blurred" elements, as a rule, does not lead to a conclusion about the likelihood of confusion if the strong elements of the trademarks are different.